Domain Name Disputes in India

Dec 2022

Domain Name As Trademarks

A domain name which is unique, capable of identifying itself and distinguishing its goods and services from those of others and acts as a reliable source identifier of concerned goods and services on the internet may be registered as a trademark.

Domain Name Disputes

A domain name dispute would arise when a domain name comparable to a registered trademark is registered by an individual or association who is not the trademark holder. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Protection Of Domain Name In India

In India, domain names may be granted protection as a trademark under the provisions of Trademarks Act, 1999, provided that the domain name fulfils all requirements to be properly registered under the Act.

An appellant in a proceeding must establish the following three elements to succeed:

The domain name is indistinguishable or confusingly similar to a trademark or service mark in which the appellant has rights;
The registrant does not have rights or legitimate interests in the domain name;
The domain name has been registered and is being used in “bad faith”.

Legal Remedies

Once registered, the registered proprietor of a domain name will have all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. This also includes the right to sue for infringement or passing off. If the challenge were successful, the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. The owner of the trademark can file a suit at the civil court in order to obtain injunction or compensation.

In Bigtree Entertainment v Brain Seed Sportainment 2018, the Delhi high court recently denied the plaintiffs, and owners of the website bookmyshow.com, an interim injunction against the defendant’s use of the domain name bookmysports.com. The court considering that prefix BOOKMY of the Plaintiff’s trademark BOOKMYSHOW was descriptive, not an arbitrary coupling of words and the plaintiff’s failure to prove that “BOOKMY” has acquired distinctiveness or secondary meaning, dismissed the application for interim injunction filed by the plaintiffs.
In Titan Indistries Limited V. Prashanth Koorapati And Ors.(1998), the defendant had registered ‘tanishq.com’ as its domain name which was based on the plaintiffs trademarks TANISHQ. The plaintiff objected the use of its Trade Marks as domain name by the defendant. The court issued an ex parte ad-interim injunction restraining defendant from registering a name or operating any business or including the word TANISHQ as a domain name on the internet; that could lead to passing off the business and goods of defendant as those of plaintiff.

Trending Blogs

US and India to join hands on the grounds of Intellectual Property Rights

After US President Donald Trump’s visit in India from February 24 to 25th February, India and the US have opted for an agreement relating to intellectual property rights or IPR. As a result of this, the cabinet sanctioned MoU with the US pertaining to IPRs, relevant to information and broadcasting as has been stated by […]

Celebrity Rights – Public, Private or Intellectual Property

Celebrity lives are mostly public these days through different sources but they too want to maintain certain privacy. This has triggered the need to maintain celebrity rights on different properties. There are several company options that are selling products with celebrity faces from bags to soaps to cosmetics to many others. It requires suitable celebrity […]

Intellectual Property Glance

The discussion on intellectual property starts with distributing it into three categories for the same of convenience and clarity. The product of intellectual efforts: The product of intellectual effort could be tangible or intangible encompassing such outcomes as literary creations, artistic creations, books, music, song, dance, drama, sculpture, paintings and even computer programs. It must […]

For a music composer, lyricist, a producer, or any performer, protecting music is a big concern under the U.S. copyright protection laws. By copyright, it indicates legal protection that is offered to the original work of music of the creator from others to use it by their name. The copyright law shall prevent others from […]

Color Trademarks in the Pharmaceutical Industry

The trademarks are vital part of company goods or service and with help of trademark; the consumers are able to identify the business better. Before deciding the correct trademark option for pharmaceutical industry, it is necessary to check for its existence. If any similar one is already present in the trademark database, it is better […]

Trademarking surnames

Having difficult surnames may be challenging to explain others and also when you want to register the name as trademark. As per the trademark and merchandise act of 1958, it is stated that a mark can be refused if one choose a personal name or surname. Though, there is no such clear specification in the […]

Pharma Companies File 15% of Patents in India

The Indian Pharma industry is primarily known for its Generic Drugs. But recently, to push its value higher in the market, the Indian pharmaceutical industry is investing more in research and development of new drugs along with increasing the potency of the existing ones to move up the value chain. From 2013-2015, out of the […]

Early-Stage Intellectual Property to Raise More Money

What is Artificial Intelligence? Creation of innovative ideas is what matters the most in running a business. People were least bothered to patent the designs. But with increasing use of almost similar ideas in the businesses, it is of great importance to patent the ideas. This shall help in better growth of the business and […]

Fluid Trademarks

Fluid mark is often thought of as a conventional mark which can be converted to a living form with some specific representation. In other words, fluid trademark is a modern method of branding that shall help achieve success easily in this digital era. As per the name, the mark tends to change with time. This […]

Music Law 101: What Does Copyright Law Protect?

Music Law 101 is all about protecting different musical works along with sound recordings to its original creator. As copyright can be a confusing part, it is better to know what all it protects so that it becomes easy. It is known that each piece of recording has two types of copyrights. First, it protects […]